Tuesday, 19 April 2016

T 2227/11 - Filing a backup appeal

A recurring problematic situation is the calculation of the appeal due dates in case the examining division corrects its refusal decision. We had this situation last month in T 105/11, where the applicant understandably (but incorrectly) took the corrected decision to compute the appeal time limits.

Also in this case, the EPO issued a corrected decision. Apparently to be on the safe side, the applicant files two appeals, one against each decision, and also pays the appeal fee for both appeals. As a result, the EPO (incorrectly) refunds the appeal fee for the first appeal, and informs the applicant (incorrectly) that he ought to take the second decision for computing his time limits.

This puts last month's decision in a new light, in which the Board hesitantly accepted the belated appeal as admissible because "the professionally represented appellant should have been aware" (R.1.8). Apparently, it is not so simple. Another interesting aspect of this decision are two internet disclosures D1 and D2, which the applicant disputes are state of the art. The applicant considers that such disclosures, should be proved beyond any reasonable doubt (citing T 1134/06). The board does not accept this, and considers balance of the probabilities sufficient.

Summary of Facts and Submissions
(...)
II. A first decision refusing the application dated 11 May 2011 was issued by the examining division and posted on the same day.

A notice of appeal against this decision was received on 19 July 2011. The appeal fee was also received on 19 July 2011.

With letter of 3 June 2011, the applicant requested correction of the decision and of the minutes of the oral proceedings.

A
corrected second decision refusing the application dated 28 July 2011
was issued by the examining division and posted on the same day.

A second notice of appeal against this decision was received on 4 August 2011.

On 8 August 2011 the appeal fee was refunded.

A second appeal fee was received on 24 August 2011.

The statement setting out the grounds of appeal was received on 21 September 2011.

With letter of 13 September 2011, the applicant was informed that:"- The decision to refuse a European Patent application dated 11.05.2011 has been cancelled.-
With regard to the communication of 24.08.2011 (Refund of fees), the
fee for appeal paid for the decision dated 11.05.2011 has been refunded.- The decision to refuse a European Patent application dated 28.07.2011 is valid.- The time limits as mentioned on Form 2019 are calculated from the decision of 28.07.2011.- This is to confirm that the notice of appeal has been filed in due time, namely on 04.08.2011.- In addition the fee for appeal in amount of 1180,- EUR has been debited on 04.08.2011 too.-
The next procedural step is filing the grounds of appeal within four
months of the notification of the decision of 28.07.2011."
(...)Reasons for the Decision

1. Admissibility of the appeal

With letter of 13 September 2011, the applicant was inter alia informed that:
the first decision refusing the application dated 11 May 2011 had been cancelled,the second decision refusing the application dated 28 July 2011 was valid, andthe time limits as mentioned on Form 2019 (ie with respect to Artcile 108 EPC) were calculated from the second decision.

The
findings in this letter are, however, incorrect as the first decision
could only have been "cancelled" by the examining division by way of an
interlocutory revision in accordance with Article 109(1) EPC 1973.
However, according to the file no interlocutory revision was decided by
the examining division (see also Case Law of the Boards of Appeal of the
EPO, 7th edition 2013, III.K.4.1.4).

The second decision dated 28 July 2011 is, therefore, null and void.

Accordingly,
contrary to what is stated in this letter, the date of notification of
the decision for the purposes of Article 108 EPC remains that of the
decision posted on 11 May 2011 and is accordingly 21 May 2011 (cf Rule
126(2) EPC).

However, as the first notice of appeal, the first
appeal fee and the statement setting out the grounds of appeal were all
received within the prescribed time limits as of 21 May 2011, the appeal
is admissible.

2. Internet citations

The appellant disputed
that D1 and D2 were prior art under article 54(2) EPC. According to T
1134/06, the fact that an internet disclosure was state of the art under
article 54(2) EPC should be proved beyond any reasonable doubt. The
facts and evidence had to meet the criteria established by the
jurisprudence in respect of prior use, ie, they had to answer the
questions when the internet disclosure was made available to the public,
what was made available and under which circumstances was it made
available. Such evidence was not shown by the examining division.

In
the board's judgement, however, the examining division was right to
comply with the practice followed at the EPO when citing documents
retrieved from the Internet provided in the Notice of the EPO concerning
internet citations (OJ EPO 8-9/2009, pages 456-462)) which is of a
later date than decision T 1134/06 referred to by the appellant. It is
noted that the examining division thereby also acted in accordance with
the instructions provided in the Guidelines for Examination in the EPO
in force at that time (cf C-IV, 6.2; Version April 2010). In particular,
the appropriate standard of proof for internet citations is the balance
of probabilities.

The EPO standard of proof is generally the
balance of probabilities. By way of exception, the standard of proof of
the balance of probabilities is shifted to a standard of proof beyond
reasonable doubt mainly in opposition where only one party has access to
information eg concerning an alleged public prior use. The difficulty
of the other party to gain access to information in support of no such
public prior use having taken place, allowing it to counter-argue, has
caused the case law to tend in this case toward expecting the public
prior use to be proved beyond reasonable doubt (see also Case Law of the
Boards of Appeal of the EPO, 7th edition 2013, I.C.2.5).

In the
specific case of internet citations of prior art, both the EPO and the
parties to the proceedings generally have equal access to the relevant
information notably concerning the authenticity of its publication date
and content. Accordingly, there is no reason to deviate from the
standard of proof of the balance of probabilities.

Indeed, while
the board agrees with the detailed reasoning in T 1134/06 that internet
citations of prior art entail a number of difficulties in assessing the
authenticity of notably the publication date and the content, in its
judgement there is no reasons to impose a stricter standard of proof.

It
is understood that these difficulties may require some far-going
investigations in the matter and the provision of supporting evidence.
In the board's view, however, it is not because the matter is more
complicated that a stricter standard of proof should be adopted.

The
burden of proof generally lies with who affirms. In the specific case
of internet citations of prior art cited by the EPO, the burden of proof
thus lies with the EPO. If the EPO however is satisfied that, on the
balance of probabilities, the internet citations constitutes prior art,
it is then up to the party to prove otherwise.

3. Documents D1, D1' and D2

Having
regard to the above, it is noted that D2 stems from Datalog
International (previous name IBG Immucor), which appears to be the
former name of the applicant, and that the Safe Track and IBG Immucor
Blood Tracking System referred to in D1 are products of these companies.
Accordingly, the applicant's access to information concerning these
documents should be unproblematic.

In the decision under appeal,
the examining division essentially held that document D1 was a
presentation that took place at the IBMS Congress 2001 (September 2001)
and that therefore the publication date was the date of the congress.
Moreover, document D1', a copy of this report dated 21 November 2001
retrieved from the Internet Archive was provided.

Document D2 was retrieved from the Internet Archive and was dated 5 June 2003.

The
examining division held that, on the balance of probabilities, both
documents D1 and D2 were prior art under Article 54(2) EPC.

Concerning
document D1, the appellant argued that the examining division failed to
prove beyond any reasonable doubt that D1 was state of the art under
Article 54(2) EPC.

As detailed above, however, a proof beyond any
reasonable doubt is not required in the present case. A proof on the
balance of probabilities suffices.

The content of documents D1 and
D1' is identical, apart from an introductory paragraph not present in
D1'. Rather than using document D1' as evidence that the publication
date of document D1 lies before the priority date of the application, it
is considered expedient to refer directly to document D1'.

The
board has no reasons to doubt the authenticity of the content and
publication date of document D1', so that the document is considered to
form part of the state of the art under Article 54(2) EPC 1973.

Having
regard to document D2, the appellant argued that in T 1134/06 it was
explicitly stated that images of the Internet Archive (archive.org) were
not necessarily instantaneous snapshots of a website but could be
assembled in the course of successive crawls and that links could
connect to different material than at the time of capture (paragraph
bridging pages 6 and 7).

However, as is clear from the article
referred to in T 1134/06, these successive crawls are completed in any
case in two days (cf Howell B.A., "Proving Web History: How to use the
Internet Archive", Journal of Internet Law, February 2006, pages 3 to 9,
in particular page 8, left-hand column, third paragraph). This point is
thus irrelevant in the present case where the crawl dates of the
different pages of D2 lie between February and June 2003 and thus
several months before the priority date of the application (19 February
2004).

Moreover, the issue of links being inactive or connecting
to different sites of the live web does not arise either in the present
case, as each page of D2 has been individually crawled on the indicated
dates (between 16.02.2011 and 24.06.2011) and archived.

Accordingly,
the board has no reasons to doubt the authenticity of the content and
publication date of document D2 either, so that also D2 is considered to
form part of the state of the art under Article 54(2) EPC 1973.

1 comment
:

In defence of the examining division, the re-issuance of the decision in the present case and in T 105/11 was the work of the formalities officer and not of the division.May be the formalities officer would have been well advised to consult either the division, or better the legal department rather than to launch a second decision. What made the things worse is that the appeal fee for the first and only correct appeal was reimbursed.... Some training seems to be urgently needed within the body of formalities officers. Such blunders should not persist.

T 1134/06 is now obsolete and it is good so. T 1134/06 resulted in the refusal of the Board (a mechanical one) to accept archive.org as a reliable source of information. It is to be doubted that an electronics board would have come to such a drastic requirement.